I’m often asked whether a person’s use of a trademark is considered trademark infringement or if it the use is acceptable as fair use. The usual answer is…wait for it…it depends. That’s right, just like most legal questions, trademark infringement is often a variety of shades of grey without any clear cut black and white answer. As a result, whether something is considered trademark infringement is very, very fact specific, as you’ll soon find out. In short, unless you’re using the mark (or something incredibly similar to it) of another company to sell exactly the same product they are, then the answer to whether something is trademark infringement will remain the lawyer’s favorite answer: it depends.

Now, because this post is going to contain a bit of law and legal discussion, I’m going to need to bolster the standard disclaimer I have on the footer of every page on this site. The information contained in this post is not an acceptable substitute for hiring your own knowledgable trademark attorney to do a full-fledged analysis of the facts unique to your situation. If you try to analyze your use yourself, you have a very high risk of getting it wrong, getting sued, and owing a lot of money to the original trademark holder. I don’t want that to happen. You don’t want that to happen. So contact a trademark attorney if you are concerned about infringement.

With that out of the way, the common definition for fair use is a very straightforward one, and it comes to us straight from the Lanham Act (that’s the trademark law). Under that definition, fair use is the use of a name, term, or device, otherwise than as a mark, of a term or device that is descriptive of and used fairly and in good faith only to describe goods or services made or sold by a party, or their geographic origin. That’s a more readable version of 15 U.S.C. § 1115(b)(5) if you’re interested in checking the statute itself. In other words, you can use another company’s trademark to describe your own goods or services, but not as a trademark. Pretty straightforward, right?

Ready for an example? Fender, the guitar maker, has a very old trademark for their guitars and other musical instruments. However, if you own an auto body shop, you can still advertise that you can fix a car’s fender. It’s not trademark infringement because you’re using “fender” to describe your own services—fender repair in this case—and you’re not using it to confuse customers into thinking you’re making and selling musical instruments.

But there’s a second type of fair use in the trademark world, known as nominative fair use. This type of fair use is very similar to the type of fair use we see with copyrights. In essence, nominative fair use means you can use another company’s trademark for things like parody, news reporting, commentary, and comparative advertising. However, here is where the grey areas of the law start to appear. Something about all of this being based on case law instead of statute that tends to cause a lot of grey areas. There’s a variety of tests for determining whether something is nominative fair use or whether it’s just plain trademark infringement. Here’s a few:

Is the product or service being advertised/commented on/parodied not readily identifiable without using the trademark?

How much of the trademark is being used? More than necessary?

Is the use of the trademark suggesting some kind of endorsement or sponsorship by the trademark owner? Disclaimers used to show no affiliation?

Is the mark being used in a misleading way?

It seems that one of the common ways a lot of businesses try to get around the trademark infringement argument is to just slap a disclaimer on the use that specifies there’s no relationship between the user and the trademark owner. However, while that may score a couple of extra points towards the nominative fair use, it’s often still not enough. Especially when we all really know that nobody reads disclaimers, terms of use, privacy policies, or any of that other boring stuff on a website.

So let’s take an example from real life. A few years ago, Tiffany, the jewelry maker, sued eBay, the online auction site, for (vicarious) trademark infringement. They claimed that because sellers on eBay were selling counterfeit Tiffany items and that eBay was advertising sellers were selling Tiffany items meant that eBay was liable for trademark infringement. The court in the case ruled eBay’s use was protected as a nominative fair use. Why? Because eBay was merely describing that there were Tiffany products available on their website, nothing suggested that eBay and Tiffany were affiliated (as if they were in an authorized distributorship arrangement), and eBay did not know in advance which items being listed were counterfeit. eBay, it should be mentioned, also seems to take a number of steps to remove any counterfeit items from its listings. As a result, eBay was found not liable for trademark infringement. Here’s the case citation if you’re interested: 600 F.3d 93 (2d Cir. 2010).

Oh, and before you decide to use another’s trademark on your website or in your advertisements, be sure to run it by your trademark attorney first. At least you can use the argument (if you get sued) that the trademark infringement wasn’t willful.

Eric Norton is a business and trademark attorney, and the founder of Norton Law Corporation, a modern law firm designed to help entrepreneurs with their legal needs. Eric also enjoys photography, gaming (tabletop and video), watches, and good design.

Merely wanna remark on few general things. The website design is perfect, the content is rattling excellent. “The stars are constantly shining, but often we do not see them until the dark hours.” by Earl Riney.

Testimonials

I’m so pleased with the work Eric Norton did for me and I highly recommend him for those looking for help with trademarks... His breadth of knowledge and expertise made him a no-brainer when it came to choosing a lawyer. He worked quickly and efficiently, and quoted me a price that my budget could handle. Small business owners looking to protect their brand and establish trademarks will want to hire Eric ASAP. My experience was very positive and I’d hire him again.

Kristin S.

I had the pleasure to hire Eric Norton to provide legal representation for my company… From our very first consultation he was very knowledgable about my legal needs and was detailed in explaining his point of view and recommendation. Moreover, he communicates in a timely manner and provides me with a timeline of when projects will be completed. It is a pleasure to have him on my team and he is the ultimate professional.

Randy W.

Eric assisted with LLC formation and he was great to work with! Very patient and thorough with superb communication/follow-up skills. He explained everything and answered all questions I had. I'm uneasy when it comes to legal/tax matters but he made me feel at ease. I'm definitely going to continue working with him for my business' legal needs.

Mestelle S.

Eric was extremely helpful and very quick with delivery his opinion on our Trademark. We had a couple calls to get situated, he walked me over the process and let me know everything that he would be doing. No joke, like 2 days later all the work was complete. The quality was high! We’ll be going back to Eric for any future work.

Disclaimer

The information on this website is not legal advice or legal opinion, merely general information, and may not represent current legal developments. Communicating via or viewing this website does not create an attorney-client relationship. Eric Norton is admitted to practice law only in California. This website does not intend to seek legal employment in any state other than California, nor is it designed to comply with attorney advertising and solicitation rules in states other than California. We assume no liability or responsibility for the statements made on this website or on other websites this website may link to. We do not guarantee any specific outcome based on prior results or any claims made on this website. This website contains attorney advertising materials.